`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`APPLE INC.
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`________________
`
`Case IPR2020-01737
`U.S. Patent 10,709,366
`
`________________
`
`PETITIONER’S REPLY TO PATENT OWNER RESPONSE
`
`
`
`
`
`Case No. IPR2020-01737
`Attorney Docket: 50095-0027IP1
`
`I.
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 8
`GROUND 1 ESTABLISHES OBVIOUSNESS ............................................. 8
`A. Ohsaki does not teach or require its translucent board 8 to be
`“rectangular” in shape ............................................................................. 13
`B. A POSITA would have recognized the benefits of Ohsaki’s teachings
`when applied to Aizawa’s sensor ............................................................ 16
`C. Modifying Aizawa’s sensor to include a convex cover as taught by
`Ohsaki enhances the sensor’s light-gathering ability ............................. 20
`D. A POSITA would have been motivated to select a convex cover to
`protect the optical elements .................................................................... 31
`E. Patent Owner mischaracterizes Aizawa’s principle of operation ........... 31
`F. A POSITA would have been motivated to add a second ring of sensors
`to Aizawa ................................................................................................ 33
`G. A POSITA would have been motivated to keep the first and second
`rings of detectors separate ....................................................................... 35
`III. GROUND 2 ESTABLISHES OBVIOUSNESS ........................................... 37
`IV. CONCLUSION .............................................................................................. 38
`
`
`
`
`
`
`
`
`ii
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`
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`EXHIBITS
`
`Case No. IPR2020-01737
`Attorney Docket: 50095-0027IP1
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`APPLE-1001
`
`U.S. Patent No. 10,709,366 to Poeze, et al. (“the ’366 patent”)
`
`APPLE-1002
`
`Excerpts from the Prosecution History of the ’366 Patent (“the
`Prosecution History”)
`
`APPLE-1003
`
`Declaration of Dr. Thomas W. Kenny
`
`APPLE-1004
`
`Curriculum Vitae of Dr. Thomas W. Kenny
`
`APPLE-1005
`
`Masimo Corporation, et al. v. Apple Inc., Complaint, Civil
`Action No. 8:20-cv-00048 (C.D. Cal.)
`
`APPLE-1006
`
` U.S. Pub. No. 2002/0188210 (“Aizawa”)
`
`APPLE-1007
`
`
`
`JP 2006-296564 (“Inokawa”)
`
`APPLE-1008
`
` Certified English Translation of Inokawa and Translator’s
`Declaration
`
`APPLE-1009
`
` U.S. Pat. No. 7,088,040 (“Ducharme”)
`
`APPLE-1010
`
` U.S. Pat. No. 6,198,951 (“Kosuda”)
`
`APPLE-1011
`APPLE-1012
`
` RESERVED
` RESERVED
`
`APPLE-1013
`
` RESERVED
`
`APPLE-1014
`
` U.S. Pub. No. 2001/0056243 (“Ohsaki”)
`
`APPLE-1015
`
`
`
`“Design and Evaluation of a New Reflectance Pulse Oximeter
`Sensor,” Y. Mendelson, et al.; Worcester Polytechnic Institute,
`Biomedical Engineering Program, Worcester, MA 01609;
`Association for the Advancement of Medical Instrumentation,
`
`iii
`
`
`
`
`
`APPLE-1016
`
`APPLE-1017
`
`APPLE-1018
`
`
`APPLE-1019
`
`Case No. IPR2020-01737
`Attorney Docket: 50095-0027IP1
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`
`
`
`
`
`
`Vol. 22, No. 4, 1988; pp. 167-173 (“Mendelson-1988”)
`“A Wearable Reflectance Pulse Oximeter for Remote
`Physiological Monitoring,” Y. Mendelson, et al.; Proceedings
`of the 28th IEEE EMBS Annual International Conference,
`2006; pp. 912-915 (“Mendelson-2006”)
`“Noninvasive Pulse Oximetry Utilizing Skin Reflectance
`Photoplethysmography,” Y. Mendelson, et al.; IEEE
`Transactions on Biomedical Engineering, Vol. 35, No. 10,
`October 1988; pp. 798-805 (“Mendelson-IEEE-1988”)
`“Acrylic: Strong, stiff, clear plastic available in a variety of
`brilliant colors,” available at
`https://www.curbellplastics.com/Research-
`Solutions/Materials/Acrylic
`
` U.S. Pat. No. 7,031,728 (“Beyer”)
`
`APPLE-1020
`
` U.S. Pat. No. 7,092,735 (“Osann, Jr.”)
`
`APPLE-1021
`
` U.S. Pat. No. 6,415,166 (“Van Hoy”)
`
`APPLE-1022
`
` RESERVED
`
`APPLE-1023
`
`APPLE-1024
`
`APPLE-1025
`APPLE-1026
`
` U.S. Pub. No. 2005/0276164 (“Amron”)
`
`
`
`“Measurement Site and Photodetector Size Considerations in
`Optimizing Power Consumption of a Wearable Reflectance
`Pulse Oximeter,” Y. Mendelson, et al.; Proceedings of the 25th
`IEEE EMBS Annual International Conference, 2003; pp. 3016-
`3019 (“Mendelson-2003”)
` U.S. Pat. No. 6,801,799 (“Mendelson-’799”)
` Declaration of Jacob Munford
`
`iv
`
`
`
`
`APPLE-1027
`APPLE-1028
`APPLE-1029
`
`APPLE-1030
`APPLE-1031
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`APPLE-1032
`APPLE-1033
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`APPLE-1034
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`APPLE-1035
`
`APPLE-1036
`
`
`APPLE-1037
`
`Case No. IPR2020-01737
`Attorney Docket: 50095-0027IP1
`
` U.S. Pub. No. 2007/0093786 (“Goldsmith”)
` RESERVED
` Wikipedia: The Free Encyclopedia, “Universal asynchronous
`receiver-transmitter” at
`https://en.wikipedia.org/wiki/Universal_asynchronous_receiver
`-transmitter, last accessed 08/27/2020
` RESERVED
` Scheduling Order, Masimo v. Apple et al., Case 8:20-cv-00048,
`Paper 37 (April 17, 2020)
` Stipulation by Apple
`
` Telephonic Status Conference, Masimo v. Apple et al., Case
`8:20-cv-00048, Paper 78 (July 13, 2020)
`Joseph Guzman, “Fauci says second wave of coronavirus is
`‘inevitable’”, TheHill.com (Apr. 29, 2020), available at:
`https://thehill.com/changing-america/resilience/natural-
`disasters/495211-fauci-says-second-wave-of-coronavirus-is
`“Tracking the coronavirus in Los Angeles County,”
`LATimes.com (Aug. 20, 2020), available at
`https://www.latimes.com/projects/california-coronavirus-cases-
`tracking-outbreak/los-angeles-county/
`Order Amending Scheduling Order, Masimo et al. v. True
`Wearables et al., Case 8:18-CV-02001 (July 7, 2020)
`
`
`
`Masimo Corporation, et al. v. Apple Inc., Second Amended
`Complaint, Civil Action No. 8:20-cv-00048 (C.D. Cal.)
`
`APPLE-1038 to 1039
`
`RESERVED
`
`APPLE-1040
`
`Order Granting Stipulation to Amend the Scheduling Order,
`Masimo v. Apple et al., Case 8:20-cv-00048, Paper 201
`(September 21, 2020)
`
`v
`
`
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`Case No. IPR2020-01737
`Attorney Docket: 50095-0027IP1
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`
` U.S. Patent No. 5,355,242 (“Eastmond”)
`APPLE-1041
` U.S. Patent No. 7,230,227 (“Wilcken”)
`APPLE-1042
`APPLE-1043 to 1046
`RESERVED
`
`APPLE-1047
`
` U.S. Patent No. 4,941,236 (“Sherman”)
`
`APPLE-1048
`
`Order Re Motion to Stay, Masimo v. Apple, Case 8:20-cv-
`00048, Paper 201 (October 13, 2020)
`
`APPLE-1049
`
`Second Declaration of Robert Jacob Munford
`
`APPLE-1050
`
`Declaration of Gordon MacPherson: Mendelson-2006
`
`APPLE-1051
`
`Declaration of Gordon MacPherson: Mendelson-2003
`
`APPLE-1052
`
`Declaration of Gordon MacPherson: Mendelson-IEEE-1988)
`
`APPLE-1053
`
`Deposition Transcript of Dr. Vijay Madisetti in IPR2020-
`01536, IPR2020-01538 (August 3, 2021)
`
`APPLE-1054
`
`APPLE-1055
`
`APPLE-1056
`
`APPLE-1057
`
`Deposition Transcript of Dr. Vijay Madisetti in IPR2020-
`01520, IPR2020-01537, IPR2020-01539, Day 1 (August 1,
`2021)
`
`RESERVED
`
`Deposition Transcript of Dr. Vijay Madisetti in IPR2020-
`01520, IPR2020-01537, IPR2020-01539, Day 2 (August 2,
`2021)
`
`“Refractive Indices of Human Skin Tissues at Eight
`Wavelengths and Estimated Dispersion Relations between 300
`and 1600 nm,” H. Ding, et al.; Phys. Med. Biol. 51 (2006); pp.
`1479-1489 (“Ding”)
`
`vi
`
`
`
`
`APPLE-1058
`
`APPLE-1059
`
`Case No. IPR2020-01737
`Attorney Docket: 50095-0027IP1
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`“Analysis of the Dispersion of Optical Plastic Materials,” S.
`Kasarova, et al.; Optical Materials 29 (2007); pp. 1481-1490
`(“Kasarova”)
`
`Deposition Transcript of Dr. Thomas W. Kenny in IPR2020-
`01520, IPR2020-01536, IPR2020-01537, IPR2020-01538,
`IPR2020-01539, Day 2 (September 18, 2021)
`
`APPLE-1060
`
`Second Declaration of Dr. Thomas W. Kenny
`
`APPLE-1061
`
`Eugene Hecht, Optics (2nd Ed. 1990)
`
`APPLE-1062
`
`Eugene Hecht, Optics (4th Ed. 2002)
`
`APPLE-1063
`
`Design of Pulse Oximeters, J.G. Webster; Institution of Physics
`Publishing, 1997 (“Webster”)
`
`vii
`
`
`
`
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`Case No. IPR2020-01737
`Attorney Docket: 50095-0027IP1
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`I.
`Introduction
`Apple Inc. (“Petitioner” or “Apple”) submits this Reply to Patent Owner’s
`
`Response (“POR”) to the IPR Petition for U.S. Patent No. 10,709,366 (“the ’366
`
`Patent”) filed by Masimo Corporation (“Patent Owner” or “Masimo”). As
`
`demonstrated below, the POR fails to address, much less rebut, positions advanced in
`
`the Petition. Accordingly, Apple respectfully submits that the Board should find
`
`claims 1-27 (“Challenged Claims”) of the ’366 Patent unpatentable.
`
`II. Ground 1 Establishes Obviousness
`As explained in Dr. Kenny’s first declaration, “a POSITA would have found it
`
`obvious to modify the [Aizawa] sensor’s flat cover…to include a
`
`lens/protrusion…similar to Ohsaki’s translucent board 8, so as to improve adhesion
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`between the user’s wrist and the sensor’s surface, improve detection efficiency, and
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`protect the elements within the sensor housing.” APPLE-1003, ¶¶79-84; APPLE-
`
`1060, ¶7. Rather than attempting to rebut these points, Masimo offers arguments that
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`are factually flawed and legally irrelevant.
`
`Specifically, Masimo contends that “Ohsaki and Aizawa employ different
`
`sensor structures (rectangular versus circular) for different measurement locations
`
`(back side versus palm side of the wrist), using different sensor surface shapes
`
`(convex versus flat) that are tailored to those specific measurement locations” and
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`from this concludes that “[a] POSITA would [not] have been motivated to combine
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`8
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`
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`the references and reasonably expected such a combination to be successful.” POR,
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`2; APPLE-1060, ¶8.
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`But Masimo avoids addressing the merits of the combinations, relies on
`
`mischaracterizing the combinations and Dr. Kenny’s testimony, and ignores the
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`“inferences and creative steps” that a POSITA would have taken when modifying
`
`Aizawa’s sensor to achieve the benefits taught by Ohsaki/Mendelson-
`
`2003/Goldsmith. APPLE-1060, ¶9; KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398,
`
`418 (2007).
`
`Contrary to Masimo’s contentions, Ohsaki does not limit its benefits to a
`
`rectangular sensor at a particular body location, and a POSITA would not have
`
`understood those benefits as being so limited. APPLE- 1060, ¶110. Instead, and as
`
`shown in Ohsaki’s FIG. 2 below, Ohsaki attributes the reduction of slippage to the
`
`fact that “the convex surface of the translucent board…is in intimate contact
`
`with...the user’s skin.”1 APPLE-1003, ¶77; APPLE-1014, [0015]-[0017], [0025],
`
`FIGS. 1-4; APPLE-1060, ¶¶10-11.
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`1 Unless otherwise noted, emphases are added.
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`Case No. IPR2020-01737
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`APPLE-1014, FIG. 2 (annotated).
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`Absent from Ohsaki’s discussion of these benefits is any suggestion that they
`
`relate to a shape of the Ohsaki sensor’s housing, or to a shape of the exterior edge
`
`perimeter of the translucent board 8. APPLE-1060, ¶12. Rather, when describing
`
`the advantages associated with translucent board, Ohsaki contrasts a “convex
`
`detecting surface” from a “flat detecting surface,” and explains that “if the
`
`translucent board 8 has a flat surface, the detected pulse wave is adversely affected
`
`by the movement of the user’s wrist,” but that if the board “has a convex
`
`surface…variation of the amount of the reflected light…that reaches the light
`
`receiving element 7 is suppressed.” APPLE-1003, ¶78; APPLE-1014, [0015],
`
`[0025].
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`10
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`Accordingly, a POSITA would have understood that a convex cover would
`
`reduce the adverse effects of user movement on signals obtainable by Aizawa’s
`
`photodetectors, which like Ohsaki’s light receiving elements, detect light reflected
`
`from user tissue. APPLE- 1060, ¶13; APPLE-1003, ¶¶78-80; APPLE-1014,
`
`[0015]-[0017], [0025], FIGS. 1-4; APPLE-1006, [0012]-[0013], [0023]-[0026],
`
`[0030], [0034], FIGS. 1(a)/(b).
`
`As illustrated below, the POSITA would have found it obvious to improve
`
`Aizawa’s sensor based on Ohsaki’s teachings, and would have been fully capable of
`
`making any inferences and creative steps necessary to achieve the benefits obtainable
`
`by modifying Aizawa’s cover to feature a convex detecting surface.2 APPLE-1060,
`
`¶14; KSR, 550 U.S. at 418; APPLE-1008, ¶¶14-15, FIG. 1.
`
`
`2 Notably, Ohsaki nowhere depicts or describes a rectangular cover. APPLE-
`
`1060, ¶14 APPLE-1014, [0001]-[0030]; FIGS. 1-4B. Even if
`
`Ohsaki’s cover were understood to be rectangular, “[t]he test for obviousness is not
`
`whether the features of a secondary reference may be bodily incorporated into the
`
`structure of the primary reference….” Allied Erecting v. Genesis Attachments, 825
`
`F.3d 1373, 1381 (Fed. Cir. 2016).
`
`11
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`APPLE-1006, FIG. 1(b)(annotated)
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`
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`Contrary to Masimo’s contentions, the POSITA would not have been
`
`dissuaded from achieving those benefits by a specific body location associated with
`
`Ohsaki’s sensor. POR, 33-39; APPLE-1060, ¶¶15-17. Instead, a POSITA would
`
`have understood that a convex cover would have provided the benefits described by
`
`Ohsaki in a sensor placed, e.g., on the palm side of the wrist. Id.; APPLE-1014,
`
`[0025], Claim 3, FIGS 4A/B; APPLE-1063, 91.
`
`Masimo also contends that arranging Aizawa’s detectors as per Mendelson-
`
`2003 would change the principle of operation of Aizawa while producing an inferior
`
`sensor. POR, 54-55. But as explained below, this argument is based on a
`
`misunderstanding of both Aizawa and Petitioner’s proposed combination as would be
`
`understood by a POSITA.
`
`For these and other reasons, the Board should reject Masimo’s arguments,
`
`which avoid addressing the merits of the combinations advanced by Petitioner and
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`are grounded in disregard for well-established principles of patent law, for example,
`12
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`that “[a] person of ordinary skill is also a person of ordinary creativity, not an
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`automaton,” and that “[t]he test for obviousness is not whether the features of a
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`secondary reference may be bodily incorporated into the structure of the primary
`
`reference” but rather “what the combined teachings of those references would have
`
`suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413 (C.C.P.A.
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`1981); Facebook, Inc. v. Windy City Innovations, LLC, 953 F.3d 1313, 1333 (Fed.
`
`Cir. 2020); KSR, 550 U.S. at 418.
`
`A. Ohsaki does not teach or require its translucent board 8 to
`be “rectangular” in shape
`The Petition demonstrates that a POSITA would have modified Aizawa in
`
`view of Ohsaki such that Aizawa’s cover “would include a convex surface,
`
`improving adhesion between a subject’s wrist and a surface of the sensor.”
`
`Petition, 25-31; APPLE-1003, ¶¶76-82. Ohsaki describes that the “convex
`
`surface of the translucent board 8” is responsible for this improved adhesion.
`
`APPLE-1014, [0025]; APPLE-1060, ¶18.
`
`
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`Masimo argues it is not the “convex surface” that improves adhesion but
`
`instead a supposed “longitudinal shape” of “Ohsaki’s translucent board [8].” See
`
`POR, 12, 24-30 (citing APPLE-1014, [0019]). But the portion of Ohsaki cited does
`
`not include any reference to board 8. See APPLE-1014, [0019]; APPLE-1060, ¶18.
`
`Instead, Ohsaki ascribes this “longitudinal” shape to a different component:
`
`“detecting element 2.” See id. Ohsaki never describes the “translucent board 8” as
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`13
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`“longitudinal,” and nowhere describes “translucent board 8” and “detecting element
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`2” as having the same shape. See generally APPLE-1014; APPLE-1060, ¶18.
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`Moreover, Ohsaki never describes board 8, or any other component, as “rectangular”;
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`the words “rectangular” and “rectangle” do not appear in Ohsaki’s disclosure. See
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`generally APPLE-1014; APPLE-1060, ¶19.
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`The POR incorrectly assumes that because Ohsaki’s light emitting element and
`
`light receiving element are arranged longitudinally, Ohsaki’s translucent board must
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`be rectangular. APPLE-1014, [0009], [0019]; POR, 16-17. A POSITA would have
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`known and understood that an elliptical/circular sensor or board configuration can
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`have a longitudinal structure/appearance under a cross-sectional view. APPLE-1060,
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`¶20. An example illustrating such an understanding is shown below. APPLE-1010,
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`8:42-56; APPLE-1060, ¶20.
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`14
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`APPLE-1010, FIGS 3 and 4
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`
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`Masimo then asserts that “Ohsaki illustrates two cross-sectional views of its
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`board that confirm it is rectangular.” POR, 16. Masimo identifies “two cross-
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`sectional views” as FIGS. 1-2, and infers the supposed “rectangular shape” of the
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`translucent board 8 based on FIG. 1 showing the “short” side of the device, and FIG.
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`2 showing the “long” side of the same device. POR, 16-18. But, Ohsaki’s FIG. 2 is
`
`“a schematic diagram,” not a cross-sectional view, and Ohsaki never specifies that
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`FIGS. 1-2 are different views of the same device. APPLE-1014, [0013].
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`Accordingly, nothing in Ohsaki supports Masimo’s inference that the “translucent
`
`board 8” must be “rectangular” in shape. See, e.g., APPLE-1014, [0013], [0019],
`15
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`[0025], FIG. 2; APPLE-1060, ¶21. Further, even if it is possible for the board 8 to be
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`“rectangular,” Ohsaki certainly does not teach nor include any disclosure “requiring”
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`this particular shape. See id. For at least this reason, Masimo’s arguments that are
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`premised on Ohsaki requiring the board 8 to be “rectangular” necessarily fail.
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`APPLE-1060, ¶22.
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`Even if Ohsaki’s translucent board 8 were understood to be rectangular,
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`obviousness does not require “bodily incorporation” of features from one reference
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`into another, and a POSITA, being “a person of ordinary creativity, not an
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`automaton,” would have been fully capable of modifying Aizawa to feature a light
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`permeable protruding convex cover to obtain the benefits attributed to such a cover
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`by Ohsaki. Facebook, 953 F.3d at 1333; KSR, 550 U.S. at 418; APPLE-1060, ¶23.
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`B. A POSITA would have recognized the benefits of Ohsaki’s
`teachings when applied to Aizawa’s sensor
`Masimo contends that “Ohsaki indicates that its sensor’s convex board only
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`improves adhesion when used on the back (i.e., watch) side of the wrist,” that
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`“Aizawa requires its sensor be positioned on the palm side of the wrist,” and
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`concludes that “[a] POSITA seeking to improve adhesion of Aizawa’s sensor would
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`not incorporate a feature that only improves adhesion at a different and unsuitable
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`measurement location.” POR, 33. But Ohsaki does not describe that its sensor can
`
`only be used at a backside of the wrist. APPLE-1060, ¶24. Instead, at most, Ohsaki
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`16
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`describes such an arrangement with respect to a preferred embodiment. Id.; APPLE-
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`1014, [0019].
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`Indeed, Ohsaki’s specification and claim language reinforce that Ohsaki’s
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`description is not so limited. APPLE-1060, ¶25. For example, Ohsaki explains that
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`“the detecting element 2…may be worn on the back side of the user's forearm.”
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`APPLE-1014, [0030], [0028].3 Similarly, Ohsaki’s claim 1 states that “the detecting
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`element is constructed to be worn on a back side of a user’s wrist or a user’s
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`forearm.” As another example, Ohsaki’s independent claim 5 states that “the
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`detecting element is constructed to be worn on a user’s wrist or a user’s forearm,”
`
`without even mentioning a backside of the wrist or forearm. A POSITA would have
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`understood this language to contradict Masimo’s assertion that “[t]o obtain any
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`benefit from Ohsaki’s board, the sensor must be positioned on the backhand side of
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`the wrist.” POR, 23; APPLE-1060, ¶25. Yet, as explained above, a POSITA would
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`have understood that Ohsaki’s benefits are provided when the sensor is placed, for
`
`example, on either side of the user’s wrist or forearm. Id.; APPLE-1014, [0025],
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`3 As Dr. Kenny explains, the gap between the ulna and radius bones at the forearm is
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`even greater than the gap between bones at the wrist, which is already wide enough to
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`easily accommodate a range of sensor shapes (including circular). APPLE-1060,
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`¶25.
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`17
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`FIGS. 4A/B. For at least this reason, Masimo’s arguments that are premised on
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`Ohsaki requiring the detecting element to be worn on a back side of a user’s wrist or
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`a user’s forearm necessarily fail. APPLE-1060, ¶26.
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`Moreover, even assuming for sake of argument that a POSITA would have
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`understood Aizawa’s sensor as being limited to placement on the backside of the
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`wrist, and would have understood Ohsaki’s sensor’s “tendency to slip” when
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`arranged on the front side as informing consideration of Ohsaki’s teachings with
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`respect to Aizawa, that would have further motivated the POSITA to implement a
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`light permeable convex cover in Aizawa’s sensor, to improve detection efficiency of
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`that sensor when placed on the palm side. APPLE-1060, ¶27; APPLE-1014, [0015],
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`[0017], [0023], [0025], FIGS. 1-4.
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`In describing advantages associated with its translucent board, Ohsaki explains
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`with reference to FIGS. 4A and 4B that “if the translucent board 8 has a flat surface,
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`the detected pulse wave is adversely affected by the movement of the user’s wrist,”
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`but that if the board “has a convex surface…variation of the amount of the reflected
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`light…that reaches the light receiving element 7 is suppressed.” APPLE-1003, ¶¶78-
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`79; APPLE-1014, [0015], [0017], [0025]; APPLE-1060, ¶28.
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`18
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`Case No. IPR2020-01737
`Attorney Docket: 50095-0027IP1
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`APPLE-1014, FIGS. 4A-4B
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`A POSITA wouldn’t have understood these benefits of a convex surface over a
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`flat surface to be limited to one side of the wrist. APPLE-1060, ¶29; APPLE-1014,
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`[0023]-[0025]. Rather, a POSITA would have understood that, by promoting
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`“intimate contact with the surface of the user’s skin,” a convex cover would have
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`increased adhesion and reduced slippage of Aizawa’s sensor when placed on either
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`side of a user’s wrist or forearm, and additionally would have provided associated
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`improvements in signal quality. APPLE-1060, ¶29; APPLE-1014, [0015], [0017],
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`[0025]; FIGS. 1-4, claims 3-8; APPLE-1063, 87, 91. Indeed, a POSITA would have
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`recognized that modifying Aizawa’s flat plate to feature a convex protruding surface,
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`as taught by Ohsaki, would have furthered Aizawa’s goal of “improv[ing] adhesion
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`19
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`between the sensor and the wrist” to “thereby further improve the detection
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`Case No. IPR2020-01737
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`efficiency.” APPLE-1006, [0013], [0026], [0030], [0034]; APPLE-1060, ¶29.
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`Further, the POSITA would have been fully capable of employing inferences
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`and creative steps when improving Aizawa based on Ohsaki’s teachings, and would
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`have expected success when applying those teachings. APPLE-1060, ¶30; KSR, 550
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`U.S. at 418; In re Keller, 642 F.2d 413. Indeed, a POSITA would have understood
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`that adding a convex protrusion to Aizawa’s flat plate would provide an additional
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`adhesive effect that would reduce the tendency of that plate to slip, e.g., since it is
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`well-understood that physically digging into the skin with a protrusion provides an
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`additional adhesive effect. APPLE-1060, ¶30.
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`C. Modifying Aizawa’s sensor to include a convex cover as
`taught by Ohsaki enhances the sensor’s light-gathering
`ability
`Masimo argues that the combined sensor “would direct light away from the
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`detectors and thus decrease light collection and optical signal strength—not
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`increase signal strength as Petitioner incorrectly asserts.” POR, 46-53. As an
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`initial matter, Ohsaki itself uses a convex cover even though its detector is not at
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`the center, thus immediately debunking Masimo’s theories. APPLE-1060, ¶¶31,
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`56. So even if a convex cover somehow reduces signal strength, a POSITA
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`would have nonetheless recognized—as Ohsaki itself clearly recognized—that
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`the additional benefit of a convex protrusion in reducing slippage is worth
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`having. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed.
`20
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`Cir. 2000) (“The fact that the motivating benefit comes at the expense of another
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`benefit...should not nullify its use as a basis to modify the disclosure of one
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`reference with the teachings of another.”); In re Urbanski, 809 F.3d 1237, 1244
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`(Fed. Cir. 2016).
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`Moreover, a POSITA would have understood the opposite to be true: that a
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`cover featuring a convex protrusion would improve Aizawa’s signal-to-noise
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`ratio by causing more light backscattered from tissue to strike Aizawa’s
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`photodetectors than would have with a flat cover. APPLE-1060, ¶31; APPLE-
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`1063, 52, 86, 90; APPLE-1061, 84, 87-92, 135-141; APPLE-1017, 803-805.
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`Against this, Masimo and Dr. Madisetti assert that “a convex surface
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`would…direct[] light away from the periphery and towards the center of the sensor,”
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`but in so doing fail to articulate a coherent position, e.g., whether Masimo’s position
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`is that “all” light or only “some” light is directed “to” or “towards the center.” POR,
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`24, 46-53, Ex. 2004, ¶¶86-97; APPLE-1060, ¶32.
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`For example, Dr. Madisetti testified during deposition for a related case that “if
`
`you have a convex surface...all light reflected or otherwise would be condensed or
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`directed towards the center.” APPLE-1054, 40:4-11; see also id., 127:22-128:18; Ex.
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`2004, ¶87 (“A POSITA Would Have Understood That a Convex Cover Directs Light
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`To The Center Of The Sensor”); POR, 46; APPLE-1060, ¶33.
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`21
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`In contrast, Dr. Kenny has consistently testified that a POSITA would have
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`Case No. IPR2020-01737
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`understood that a convex cover improves “light concentration at pretty much all of
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`the locations under the curvature of the lens,” and for at least that reason would
`
`have been motivated to modify Aizawa’s sensor to include a convex cover as per
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`Ohsaki. Ex. 2006, 164:8-16; APPLE-1060, ¶34.
`
`i. Masimo ignores the well-known principle of
`reversibility
`The well-known optical principle of reversibility dispels Masimo’s claim that
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`“a convex cover condenses light towards the center of the sensor and away from the
`
`periphery” when applied to Aizawa. POR, 46; APPLE-1061, 87-92; APPLE-1062,
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`106-111; APPLE-1060, ¶35. According to this principle, “a ray going from P to S
`
`will trace the same route as one from S to P.” APPLE-1061, 92, 84; APPLE-1062,
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`101, 110; APPLE-1053, 80:20-82:20. Importantly, the principle dictates that rays
`
`that are not completely absorbed by user tissue will propagate in a reversible manner.
`
`APPLE-1060, ¶35. In other words, every ray that completes a path through tissue
`
`from an LED to a detector would trace an identical path through that tissue in reverse,
`
`if the positions of the LED emitting the ray and the receiving detector were swapped.
`
`Id.; APPLE-1061, 92.
`
`The annotated versions of Inokawa’s FIG. 2 presented below together illustrate
`
`the principle of reversibility applied in context. As shown, Inokawa’s FIG. 2,
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`22
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`
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`illustrates two example ray paths from surrounding LEDs (green) to a central detector
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`Case No. IPR2020-01737
`Attorney Docket: 50095-0027IP1
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`(red):
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`APPLE-1060, ¶35.
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`
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`As a consequence of the principle of reversibility, a POSITA would have
`
`understood that if the LED/detector configuration were swapped, as in Aizawa, the
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`two example rays would travel identical paths in reverse, from a central LED (red) to
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`surrounding detectors (green). APPLE-1060, ¶36. A POSITA would have
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`understood that, for these rays, any condensing/directing/focusing benefit achieved
`
`by Inokawa’s cover (blue) under the original configuration would be identically
`
`achieved under the reversed configuration:
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`APPLE-1060, ¶36.
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`
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`When factoring in additional scattering that may occur when light is reflected
`
`within human tissue, reversibility holds for each of the rays that are not completely
`
`absorbed; consequently, “if we’re concerned with the impact of the lens on the
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`23
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`system, it’s absolutely reversible.” APPLE-1059, 209:19-21, 207:9-209:21; APPLE-
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`Case No. IPR2020-01737
`Attorney Docket: 50095-0027IP1
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`1060, ¶¶37-40.
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`As shown with respect to the example paths illustrated below (which include
`
`additional scattering within tissue), each of the countless photons travelling through
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`the system must abide by Fermat’s principle. APPLE-1060, ¶¶38-40; APPLE-1062,
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`106-111. Consequently, even when accounting for various random redirections and
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`partial absorptions, each photon traveling between a detector and an LED would take
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`the quickest—and identical—path between those points, even if the positions of the
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`detector and LED were swapped. APPLE-1060, ¶40; APPLE-1059, 207:9-209:21
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`(“one could look at any particular randomly scattered path…and the reversibility
`
`principle applies to all of the pieces [of that path] and, therefore, applies to the
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`aggregate”).
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` APPLE-1060, ¶40.
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`24
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`Indeed, Aizawa itself recognizes this reversibility, stating that while the
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`Attorney Docket: 50095-0027IP1
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`configurations depicted include a central emitter surrounded by detectors, the “same
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`effect can be obtained when…a plurality of light emitting diodes 21 are disposed
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`around the photodetector 22.” APPLE-1006, [0033]; APPLE-1060, ¶¶41-44.
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`Accordingly, based at least on the principle of reversibility, a POSITA would
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`have understood that both configurations of LEDs/detectors would have identically
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`benefitted from the enhanced light-gathering ability of a convex lens/protrusion.
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`APPLE-1060, ¶45.
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`ii. Masimo ignores the behavior of scattered light
`in a reflectance-type pulse sensor
`Because Aizawa is a reflectance-type pulse sensor that receives
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`diffuse/backscattered light, its cover/lens cannot focus all incoming light toward the
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`sensor’s center. APPLE-1060, ¶46; Ex. 2006, 163:12-164:2 (“A lens in
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`general…doesn’t produce a single focal point”). Indeed, reflectance-type sensors
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`work by detecting light that has been “partially reflected, transmitted, absorbed, and
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`scattered by the skin and other tissues and the blood before it reaches the detector.”
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`APPLE-1063, 86. A POSITA would have understood that light that backscatters
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`from the measurement site after diffusing through tissue reaches the active detection
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`area from random directions and angles. APPLE-1060, ¶46; APPLE-1056, 803;
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`APPLE-1063, 90, 52.
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`25
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`Basic laws of refraction, namely Snell’s law, dictate this behavior of light.
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`Case No. IPR2020-01737
`Attorney Docket: 50095-0027IP1
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`APPLE-1061, 84; APPLE-1062, 101; APPLE-1053, 80:20-82:20; APPLE-1063, 52,
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`86, 90; APPLE-1060, ¶47. For example, referring to Masimo’s version of Inokawa’s
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`FIG. 2, further annotated below to show additional rays of light emitted from LED
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`21, it is clearly seen how some of the reflected/scattered light from the measurement
`
`site does not reach Inokawa’s centrally located detector:
`
`
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`
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`POR, 15; APPLE-1060, ¶47.
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`Indeed, far from focusing light to the center as Masimo contends, Ohsaki’s
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`convex cover provides a slight refracting effect, such that light rays that may have
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`missed the detection area are instead directed toward that area. APPLE-1060, ¶¶48-
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`49. This is particularly true in configurations like Aizawa’s where light detectors are
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`arranged symmetrically about a central light source to enable backscattered light to
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`be detected within a circular active detection area surrounding that source. APPLE-
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`1063, 86, 90. The slight refracting effect is a consequence of similar indices of
`26
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`refraction between human tissue and a typical cover material (e.g., acrylic). APPLE-
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`Case No. IPR2020-01737
`Attorney Docket: 50095-0027IP1
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`1060, ¶49 (citing APPLE-1057, 1486; APPLE-1058, 1484).
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`Attempting to support its argument that a convex cover focuses all incoming
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`light at the center, Masimo relies on the ’366 Patent’s FIG. 14B:
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`APPLE-1001, FIG. 14B; POR, 48; APPLE-1060, ¶50
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`Masimo treats this figure as an illustration of the behavior of all convex
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`surfaces with respect to a
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